The Madrid Protocol, with its origins in the late 19th Century, was set-up to allow the registration and management of marks worldwide. There are currently around 100 members which includes most major trading jurisdictions including the European Union and United States.
What is coming up?
There is a timetable of new countries expected to join the regime:
2016 - Brunei, Indonesia, Malaysia, Laos and Thailand, Gambia, Malawi and Trinidad & Tobago
2017 - Algeria, Canada, Jamaica and South Africa
With two of our offices coming on stream this year, we asked our attorneys in those countries to tell us about the specific impact on their IP regimes.
"The new Trade Mark Act, which came into force in Thailand on 28 July 2016, provides provision of international trade mark registration under the Madrid Protocol. However, the accession to the Madrid Protocol will require a separate Royal Decree which is expected to be issued in the fourth quarter of 2016. Filing an international application will not be available until Thailand accedes to the Madrid Protocol."
Yurio Astary, Senior IP Consultant, Indonesia
"The Draft of the New Indonesian Trademark Law is currently being reviewed by the Parliament and is expected to come into effect in the later part of 2016. The current draft provides for international filing based on the Madrid Protocol. But when the new law is passed, it will probably take another 1-2 years for the Government Regulations to be passed in order for international filings based on the Madrid Protocol to be implemented."
Advantages of the Madrid Protocol
- A very cost effective platform on which to build, manage and maintain a client's trade mark portfolio
- Local associates are only required if objections are raised by a local TM office or third parties
- Approximately 100 countries are now members - it is the future!
- You can add new designations as new countries join
Disadvantages of the Madrid Protocol
- Central attack. What is this? The validity of the international designations is tied to the base application/registration for 5 years. If the base is lost for any reason, all of the designations fall away too (subject to transformation)
- It only works if you use the same mark across many jurisdictions, so not attractive for local language marks.
- WIPO's approach to the classification of goods and services does not always accord with those of the national TM offices, which can cause delays and extra costs
Whatever one's views of the Madrid Protocol are, the reality is that it is here to stay and it will only become more important as more countries join and businesses, across the world, embrace it.